In a case where Gap corporation filed for a registration invalidation trial against Eul corporation, which is the right holder of a registered service mark composed of " "" and "", on the ground that the registered service mark falls under Article 7 (1) 10 of the former Trademark Act, the case holding that the registered service mark does not fall under Article 7 (1) 10 of the former Trademark Act on the ground that even if the registered service mark is used for the business of operating a funeral business, such as "the funeral business", "the well-known mark of the pre-use trademark and the service mark composed of "the", " "", etc. is not likely to cause confusion with the service business or the business of the pre-use trademark and the service mark used.

In a case where Gap corporation filed a petition for a trial on invalidation of registration against Eul corporation, the holder of the right to the registered service mark " "", which is a designated service business, on the ground that the registered service mark falls under Article 7 (1) 10 of the former Trademark Act (amended by Act No. 12751, Jun. 11, 2014; hereinafter the same shall apply), the case holding that the registration mark constitutes a well-known mark of the pre-use trademark and service mark "" (hereinafter referred to as "pre-use mark") composed of " " "," "," ", and "," and it is recognized that the registered service mark is related to the pre-use mark and the mark, but it is related to the domestic industry's basic and central sector's business and the designated service mark's business's business's "," and that it does not constitute an economic relation between the pre-use mark and the registered service mark's business's "business," and that even if it does not constitute an economic relation with the pre-use service mark's business's or service business's business's business.

Article 7(1)10 of the former Trademark Act (Amended by Act No. 12751, Jun. 11, 2014) (see current Article 34(1)11)

Frid Co., Ltd. (Law Firm Spah, Attorney Lee Lee-woo, Counsel for the plaintiff-appellant)

Modddrid Co., Ltd. (Law Firm Onnuri, Attorney Kim Sung-sung, Counsel for the plaintiff-appellant)

October 12, 2017

1. The decision made by the Intellectual Property Tribunal on March 15, 2017 by the Intellectual Property Tribunal on the case shall be revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

A. Registered service mark of this case

(1) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 1 omitted)// service mark registration (registration number 1 omitted)/ October 23, 2004./ February 15, 2006/202. 10 December 10, 2015.

(2) Marks:

(c) Designated service business: Funeral service business under Chapter 45, funeral procedure guidance service business, cremation service business, marriage wedding service business, funeral service business, funeral service business, funeral service business, funeral service business, funeral service business, funeral service business, funeral service and police service business, funeral service and police service business, funeral service and police service business, funeral service and police service business, etc.;

(b) Preregistered/service marks:

(i) the preregistered trademark;

(A) Registration number/application date/registration date/Renewal date: Trademark registration (registration number 2 omitted)/registration date/registration date/registration date: October 20, 1978/20/20 February 18, 2009

(b) Marks:

(C) Designated goods: Automobiles, trucks, trucks, trucks, buses, dump motor vehicles of Category 12 classified into goods;

(D) Person entitled to registration: Hyundai Automobile Corporation

(2) Prior registered service mark 1

(A) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 3 omitted)// service mark registration (registration number 3 omitted)/3. 14/1986 January 9, 1986/201. 15.

(b) Marks:

(C) Designated service business: as specified in attached Form 1.

(D) Person entitled to registration: Hyundai E&S, Hyundai Construction, Hyundai Industrial Development Co., Ltd., Hyundai Integrated Commercial Co., Ltd., Hyundai Heavy Industries Co., Ltd., Ltd.

(3) Prior registered service mark 2

(A) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 4 omitted)// service mark registration (registration number 4 omitted)/ October 17, 1985/ October 28, 1986/3, 207.

(b) Marks:

(C) Designated service business: as specified in attached Form 2.

(D) Person entitled to registration: Hyundai E&S, Hyundai Construction, Hyundai Industrial Development Co., Ltd., Hyundai Integrated Commercial Co., Ltd., Hyundai Heavy Industries Co., Ltd., Ltd.

(4) Prior registered service mark 3

(A) The registration number / the filing date / the registration date / the renewal registration date: service mark registration (registration number 5 omitted) / February 6, 1993 / August 29, 1994

(b) Marks:

(C) Designated services:

- Motor Vehicle sales brokerage business, motor vehicle sales agency business, in categories 35 of service business;

- Automobile brokerage business of Category 36 classified by service industry

- The motor vehicle decoration business, the motor vehicle management business, the motor vehicle cleaning business, and the motor vehicle injecting business, as classified in Chapter 37.

- Motor Vehicle driving agent business of Category 39 classified by service industry

-automobile design and design business under Chapter 42, classified into service industry;

(D) Person entitled to registration: Hyundai Automobile Corporation

(5) Prior registered service mark 4

(A) Registration number / filing date / registration date / renewal date: Service mark registration (registration number 6 omitted) / December 6, 1996 / August 14, 1998 / October 1, 2008

(b) Marks:

(c) Designated services: banking business, mutual savings and finance business, investment financing business, international financial business, lease purchasing financing business, securities business, guarantee business, trust business, credit card issuance business, installment sales financing business, classified into category 36;

(D) Right holder: Hyundai Marine Fire Insurance Corporation

(6) Prior registered service mark 5

(A) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 7 omitted)// service mark registration on December 2, 1999/ February 20, 2001/1 January 26, 201

(b) Marks: (Colored Trademark)

(c) Designated service business: Building sale business, department store business, real estate management business, real estate appraisal business, real estate management business, office rent business, apartment building management business, apartment building management business, housing management business, building management business, trade brokerage business, construction material brokerage business, development financing business, international financial investment brokerage business, financial investment intermediary business, loan collection agency business, loan collection agency business, loan collection agency business, commercial financing business, mutual fund business, mutual credit fund business, new technology venture capital business, credit card issuance business, credit card issuing business, trust business, trust business, bill exchange business, capital investment business, financial financing business, stock brokerage business, bond purchase agency business, bond collection agency business, investment financing business, installment financing business, insurance financing assessment business, financial assessment business, real estate financial assessment business, real estate financial assessment business, real estate financial assessment business,

(D) Person entitled to registration: Hyundai Industrial Development Corporation

(7) Prior registered service mark 6

(A) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 8 omitted)// service mark registration (registration number 8 omitted)/ August 19, 200; / January 17, 2012

(b) Marks:

(c) Designated service business: Development financing business, international finance business, military financing business, valuable securities depository business, financial investment brokerage business, credit business, loan financing business, loan collection agency business, loan brokerage business, loan collection agency business, credit card issuance business, guarantee business, guarantee business, lottery ticket issuance business, commercial financing business, mutual fund business, mutual credit fund business, check verification business, new technology financing business, credit card issuance business, credit card issuance business, credit card company business, trust business, trust business, bill exchange business, travel check issuance business, loan check issuance business, loan check issuance business, rental check issuance business, rent collection business, loan purchase financing business, capital investment business, financial financing business, financial guarantee business, savings bank business, electronic financing brokerage business, securities business, bond purchase business, bond collection agency business, investment financing business, installment payment business, credit service business, credit exchange business, financial assessment business, financial assessment business, financial consulting service business, financial assessment business, financial assessment business, securities exchange business, financial investment information business, securities exchange business, financial assessment business, financial assessment business, securities investment information business, financial consultation business, financial assessment business, securities information business, financial assessment business, financial information business, financial service business, financial service business,

(D) Person entitled to registration: Hyundai Card Corporation

(8) Prior registered service mark 7

(A) Registration number/application date/registration date/Renewal/: Service mark registration (registration number 9 omitted)// service mark registration (registration number 9 omitted)/ September 24, 2003// March 16, 2005/3. 11.

(b) Marks:

(c) Designated service business: Insurance agency business, insurance situation business, insurance consultation business, insurance information provision business, accident insurance business, pension insurance business, sports insurance business, automobile insurance business, liability insurance business, air insurance business, marine insurance business, fire insurance business, building sales business, real estate management business, real estate management business, office lease business, office lease business, life insurance business, mutual credit fund business, loan financing business, investment financing business, bill exchange business, rental collection business, credit business, guarantee insurance business, health insurance business, industrial accident insurance business, international finance and finance company, lease financing business, securities business, trust business, installment financing business, credit card issuance business, financial analysis business, loan assessment business, stock market business, loan assessment business.

(D) Right holder: Hyundai Marine Fire Insurance Corporation

(9) Priorly registered/service mark 1

(A) Registration number/application date/registration date/Renewal/Renewal of registration: Registration of trademark/service mark (registration number 10 omitted)/registration number / service mark (registration number 10 omitted)/3. 11/7. 21/2005. 1.

(b) Marks: (Colored Trademark)

(C) Designated goods/service: as specified in attached Form 3.

(D) Person entitled to registration: Hyundai Elevator Corporation

(10) Priorly registered/service mark 2

(A) Registration number/application date/registration date/Renewal/Renewal of registration: Registration of trademark/service mark (registration number 11 omitted)//service mark (registration number 11 omitted)//3. 11/7. 21/2005. 1.

(b) Marks: (Colored Trademark)

(C) Designated goods/service: as specified in attached Form 4.

(D) Person entitled to registration: Hyundai Elevator Corporation

C. Details of the instant trial decision

(1) On October 10, 2016, the Defendant asserted that “The Plaintiff’s registered service mark of the instant case constitutes Note 1 of Article 7(1)10 of the former Trademark Act (amended by Act No. 12751, Jun. 11, 2014; hereinafter the same)” and filed a petition for a registration invalidation trial (2016Da3142) on the instant registered service mark.

(2) On March 15, 2017, the Korean Intellectual Property Tribunal rendered the instant trial ruling cited by the Defendant on the ground that “The mark is well-known.” The registered service mark of this case is similar to the mark of prior use, and is recognized as having close relation with the mark of prior use if it is used in the designated service business, and thus, constitutes a service mark likely to cause mistake and confusion on the source of goods or service business.”

[Ground of recognition] Unsatisfy, Gap evidence Nos. 1 and 2, the purport of the whole pleadings

2. Whether the trial decision of this case is unlawful

A. Summary of the plaintiff's assertion (the grounds for revoking the trial decision)

For the following reasons, the registered service mark of this case does not fall under Article 7 (1) 10 of the former Trademark Act, and thus, the decision of this case, which is otherwise decided, should be revoked in an unlawful manner.

- The designated service business of the instant registered service mark is not likely to be confused because it is similar to the business of the prior use mark or is not closely related to the economy.

- The registered service mark of this case is well-known and well-known mark of the plaintiff in relation to the business of commercial operation, etc., so there is no possibility of confusion with the prior use mark.

- The wide range of rights cannot be recognized with respect to the mark with relatively low distinguishability.

- The use of the registered service mark of this case was made in a way that would avoid confusion as to source with the company of Hyundai Group, so there is no possibility of confusion.

B. Whether the registered service mark of this case constitutes Article 7(1)10 of the former Trademark Act

(1) Relevant legal principles

Article 7(1)10 of the former Trademark Act provides that a trademark likely to cause confusion with another person’s goods or service marks which are recognized remarkably among consumers shall be the grounds for registration of trademark non-registration. The grounds for non-registration under the above provision include the following: (a) the degree of well-knownness of another person’s pre-use trademark or service mark; (b) each composition of another person’s pre-use trademark or service mark; (c) the similarity or closeness of goods or business; (d) the degree of business diversification of a person holding a pre-use trademark or service mark; and (e) the degree of overlapping among consumers as a result of comparison and combination: (a) consumers of the trademark in question may easily cause confusion with another person’s well-known trademark or service mark, goods, or business thereof (see Supreme Court Decision 2008Hu2510, May 27, 2010, etc.).

Under the modern industrial structure where one company produces and sells different kinds of goods across several industrial fields, even if a trademark similar to a well-known trademark is used for goods other than the designated goods of a well-known trademark, consumers are likely to mislead or confuse the origin of goods or business by recognizing that the goods are produced and sold by a well-known trademark right holder or a person with a special relationship with the former. Thus, registration and use of a similar trademark should not be allowed solely on the ground of different designated goods. However, in cases where goods or business using a similar trademark are difficult to be deemed to have competitive or economic relations so as to attract consumers by taking advantage of the well-known degree of the well-known trademark and the reputation of the designated goods or business, registration and use of the similar trademark shall not be prohibited (see Supreme Court Decision 90Hu1376, Feb. 12, 1991, etc.).

(2) Specific review

A prior-use mark is a mark used by companies affiliated to the Hyundai Group as prior-registered/service mark. It constitutes a well-known mark which acquired well-knownness prior to October 23, 2004, the time of filing the application for the instant registered service mark, and is remarkably recognized by ordinary consumers or traders (in this regard, there is no dispute between the parties).

Furthermore, the registered service mark “” is a mark consisting of “on the port,” and “comprehensive comparison,” and “on the port,” which includes “on the port,” which is a prior-use mark, and is recognized as an essential part. As such, the relationship between the prior-use mark and its mark is recognized, such as making the prior-use mark connected with the trademark in its composition, hub, concept, etc.

However, for the following reasons, even if the Plaintiff’s registered service mark of this case is used in “the funeral business,” etc., it is difficult to deem that it may cause confusion with the goods or business in which the prior use mark is used.

① As seen earlier, “the funeral business”, which is the designated service business of the instant registered service mark, is not included in the designated goods or the designated service business of the preregistered/service marks.

② The Modern Group is running only the business related to the type of domestic industry’s foundation and centering on automobiles, ships, construction, department stores, finance, etc., and not only at the time of application for the instant registered service mark, but also at the time of application for the instant registered service mark, but also has not been running the business related to “ funeral business,” which is the designated service business of the instant registered service mark (the fact that there is no dispute, No. 14-1,

③ There is no evidence to prove that a crime modern group is expected to enter into the business of the future, such as a funeral service. Rather, the commercial operation, such as a funeral service, which is the designated service business of the instant registered service mark, is likely to be seen as a type of business that takes advantage of the company’s image from the large enterprise emphasizing its image, and there is no example that other large enterprises also have entered the commercial operation, such as a funeral service, etc., in light of the fact that the modern group is unlikely to enter into the commercial operation, such as a future funeral service.

④ In light of the above nature of the service business, type of business, transaction circumstances, etc., it seems that even if the registered service mark of this case is used for commercial operations, such as the “place business,” which is the designated service business, it is unlikely to cause consumers to misunderstand or confuse the business of the prior use mark. Even though the prior use mark is well-known, the service business or business in which the prior use mark is used is related to the business in a field which is based on the domestic industry and centered on the domestic industry, and not only is it weak to have a correlation with the commercial operation, such as the “place business,” which is the designated service business of this case, which is the designated service mark of this case, but also it is difficult to say that a large enterprise such as a group of modern modern groups, has engaged in such service business or business, or is scheduled to engage in such business in the future, there is no evidence to prove that the designated service business of this case is likely to attract consumers by taking advantage of the reputation and reputation of the prior use mark.

C. Whether the decision of this case was unlawful

Ultimately, even if the registered service mark of this case is used for a commercial operation, such as a funeral business, which is its designated service business, it cannot be deemed that it may cause confusion with the service business that uses the prior use mark, and thus, it does not fall under Article 7(1)10 of the former Trademark Act. Accordingly, the trial decision of this case, which different conclusions, is unlawful.

3. Conclusion

Therefore, the plaintiff's claim seeking the cancellation of the trial decision of this case is reasonable, and it is decided as per Disposition with the assent of all participating Justices.

[Attachment 1] Omitted

[Attachment 2] Omitted

[Attachment 3] Omitted

[Attachment 4] Omitted

Judges Kim Kim-Excellent (Presiding Judge) and Lee Ho-san

1) The Defendant asserted Article 34(1)11 of the current Trademark Act as the applicable law, and the trial decision of this case also premised on this premise, but Article 7(1)10 of the former Trademark Act, which is the law at the time of the application for the registered service mark of this case, is the applicable law.